Neutral Citation No: [2005] IEHC 411
[2005 No. 3/PAP]
IN THE MATTER OF IRISH PATENT NUMBER 1121375 FILED ON 11TH OCTOBER, 1999, REGISTERED IN THE NAME OF AKZO NOBEL N.V. IN RESPECT OF AN ALLEGED INVENTION CALLED "HIGH PURITY COMPOUND (7 ALPHA, 17 ALPHA) – 17 – HYDROXY – 7/ METHYL – 19 – nor – 17 – pregn – 5 (10) – EN – 20 – YN – 3 – ONE"
AND
IN THE MATTER OF IRISH PATENT NUMBER 1499278 FILED ON 19TH MAY, 2004, REGISTERED IN THE NAME OF AKZO NOBEL N.V. IN RESPECT OF AN ALLEGED INVENTION CALLED "IMMEDIATE-RELEASE PHARMACEUTICAL DOSAGE FORM COMPRISING POLYMORPHOUS TIBOLONE" AND IN THE MATTER OF THE PATENTS ACT, 1992
PETITIONER
JUDGMENT of Mr. Justice Kelly delivered the 1st day of December, 2005
Introduction
Norton Health Care Limited (Norton) petitions for the revocation of two Irish patents held by the respondent, Akzo Nobel N.V. (Nobel). They are Irish patent number 1121375 (the 375 patent) and Irish patent number 1499278 (the 278 patent).
The grounds on which it is contended that the 375 patent is invalid can be summarised as (a) lack of novelty, (b) lack of inventive step and (c) insufficiency of disclosure.
Insofar as the 278 patent is concerned the sole ground relied upon by Norton is lack of inventive step.
The petition was presented on 4th August, 2005. On 15th September, 2005, a motion was issued seeking to transfer the proceedings into the Commercial List. I heard that motion on 10th October, 2005 and granted the application. In considering what further directions ought to be given it emerged from correspondence which had been exchanged between the parties that an issue had arisen upon which a direction of the court would be necessary. Accordingly, I directed that that issue be listed for hearing on 24th October, 2005 and this is my judgment in respect of it.
The Issue
The issue arose as a result of Nobel's solicitors indicating, by letters dated 5th and 7th October, 2005, that in the event that claims set forth in the 375 patent as it currently stands are held to be invalid, Nobel would apply to amend the claims of that patent in the manner set forth in a draft which accompanied the letter of 5th October, 2005.
In Nobel's solicitor's letter of 5th October, 2005, the following was said:-
"Please be advised that our clients intend to bring an application for leave to amend the 375 patent. We enclose a copy of the proposed amended claim. You will note that these are precisely the same amendments for which our clients have sought leave in the Scottish proceedings,… We would emphasise that our clients maintain that the Irish patent 1121375 as unamended is valid. It would seem appropriate that the application for leave to amend be heard at the trial of the action."
Norton's solicitors replied the following day. They said:-
"We note that your client intends to bring an application for leave to amend the 375 patent in the form attached to your letter. Such amendments to the 375 patent would deal with our client's objections to the validity of the patent in its current form thus removing all issues between our clients in relation to this patent. Indeed we note that if they had been proposed following our letter of 10th August, 2005, considerable costs could have been saved in these proceedings. The issue of costs will however have to be addressed and we reserve our rights in this regard.
This obviously leaves the issue of the validity of the 278 patent to be dealt with separately.
In such circumstances it would seem most efficient and cost effective for all parties concerned for your client's motion for amendment to be dealt with by the court as soon as possible. Please confirm that your client will be agreeable to such a course of action in which case we suggest that the position be explained to Mr. Justice Kelly on Monday, and a time table in respect of the motion sought."
Next day Nobel's solicitors replied stating:-
"As mentioned in our letter our clients maintain that Irish patent 1121375 as unamended is valid and our clients will so contend at the hearing of your clients petition to revoke. We also mentioned that it would seem appropriate that the application for leave to amend be heard at the trial of the action. It is only if the court finds that the original claims are unallowable that our clients shall seek leave to amend in the form of the proposed amended claims enclosed with our letter."
This correspondence left Norton under the impression that Nobel was proposing that in the event of its original claims being disallowed an application would be made after the trial for leave to amend the patent. A good deal of Norton's argument in opposition was based on this supposition. I confess that having read the correspondence prior to the hearing I was left under the same impression myself.
On the hearing, counsel on behalf of Nobel made it clear that was not what was envisaged. Rather it is Nobel's intention to seek leave at this juncture to make the necessary amendment which will then be pursued at trial only in the event that Norton is successful in having the 375 patent in its present form revoked. What is envisaged is that there will be a single trial but the judge will only have to consider the amendment in the event of Norton being successful in having the 375 patent revoked.
Even though this course would undoubtedly be preferable to the course which it was thought Nobel was proposing (which would have involved two trials) it is nonetheless objected to by Norton.
Norton contends that even this approach means that it will be forced to a hearing in respect of the 375 patent which, even if successful, will not result in the revocation of that patent. Rather it will result in an amendment to the patent to a form to which it is prepared to consent now. By proceeding as Nobel proposes it is contended that there will be much waste of time and costs. In any event Norton contends that there is no jurisdiction to proceed in the manner suggested.
The Amendments Proposed
Nobel's proposed amendments deal with all of the objections raised by Norton to the 375 patent in its present form.
In this petition Norton objects to claims 1-3, 7 and 9-14 of the 375 patent. It is contended that these claims lack novelty and inventive step. The proposed amendments seek to limit the relevant claims of the patent. The proposed amendments address completely the present complaints of Norton. Norton may well challenge the validity of the amended claims of the patent if such are allowed.
The Arguments
In the written submissions which were exchanged prior to the hearing, Norton complained (and in my view with justification) that it was not at all clear how Nobel intended to proceed in relation to the proposed amendments. Four possibilities were identified. They were that-
(a) Nobel intended to issue a motion now seeking an amendment of the patent if, and only if, it is unsuccessful in defending the revocation proceedings,
(b) Alternatively Nobel might defer issuing any motion and only issue it if the revocation proceedings are successful,
(c) Nobel might issue a motion to amend now and seek to argue at the trial of the revocation action, that the 375 patent is valid and in the alternative that its proposed amendments are valid and should be granted,
and
(d) That Nobel intended that the trial would initially deal with the issue of revocation of the current form of the patent and the application to amend would only ever proceed if the 375 patent were found to be invalid.
It was contended that whichever of those approaches were taken by Nobel the effect would be that Norton would be forced to fight a revocation action in respect of the 375 patent which, even if successful, might not result in the revocation of that patent. Rather it would result in the amendment of the patent to a form to which the petitioner is prepared to consent now thus, it was said, avoiding the considerable expense, management and court time which would be involved in any of the above options.
Nobel countered by arguing that Norton appeared to be contending that Nobel must elect as between (a) fighting the proceedings so as to defend the claim of the 375 patent as originally granted or (b) applying to amend the claims pursuant to s. 38 of the Patents Act, 1992, but that it could not seek to take step (a) while reserving the right to fall back on (b) in the event that the defence of the claims of the 375 patent is unsuccessful.
Relevant Legislation
It is s. 38 of the Patents Act, 1992, which deals with the amendment of a patent after grant. That section provides as follows:-
"(i) Subject to the following provisions of this section, the Controller may, on an application made in the prescribed manner by the proprietor of a patent, allow the specification of the patent to be amended, subject to such terms as to advertising the proposed amendment and such other conditions, if any, as he thinks fit; provided that no such amendment shall be allowed where there are pending before the Court or the Controller proceedings in which the validity of the patent has been or may be put in issue.
(ii) In any proceedings before the Court or the Controller in which the validity of a patent is put in issue, the Court or, as may be appropriate, the Controller may, subject to the following provisions of this section, allow the proprietor of the patent to amend the specification of the patent in such manner, and subject to such terms as to advertising the proposed amendment and as to costs, expenses or otherwise, as the Court or the Controller thinks fit.
(iii) An amendment of a specification under this section shall be invalid to the extent that it extends the subject matter disclosed in the application as filed or the protection conferred by the patent.
(iv) An amendment of a specification under this section shall have effect and be deemed always to have had effect from the date of the grant of the patent.
(v) Where an application for leave to amend a specification has been advertised in accordance with subs. (i) or (ii), any person may give within the prescribed period notice to the Court or the Controller, as may be appropriate, of his opposition to an amendment proposed by the proprietor of the patent, and if he does so shall notify the proprietor and the Court or the Controller shall consider the opposition in deciding whether the amendment, or any other amendment, should be allowed.
(vi) Where an application for an order under this section is made to the Court, the applicant shall notify the Controller who shall be entitled to appear and be heard on the hearing of the application and shall so appear if so directed by the Court."
Counsel for Norton quite properly drew my attention to the provisions of s. 50 of the 1992 Act but made it clear that it had no application in the present case. Whilst that section does provide a jurisdiction to the court to amend a specification it does so only in respect of infringement proceedings in which the patent is found to be partially invalid and partially valid. These are not infringement proceedings and the amendments will only be pursued by Nobel if the 375 patent is found to be wholly invalid. Accordingly s. 50 has no application to the present case.
The question before me falls to be decided exclusively by reference to s. 38 of the 1992 Act.
Lack of Jurisdiction
It was contended by Norton that s. 38 of the 1992 Act does not give jurisdiction to permit an amendment in the manner sought. Much of this submission was based on what was believed to be Nobel's proposal that the amendment would be sought only after its defence of the 375 patent in its present form was unsuccessful.
In support of its contentions Norton called attention to the fact that the statutory predecessor of s. 38 of the 1992 Act was s. 32(1) of the Patents Act, 1964. That provided as follows:-
"(i) In any action for infringement of a patent or any proceeding before the court for the revocation of a patent the court may, subject to the provisions of the next following section, by order allow the patentee to amend his complete specification in such manner, and subject to such terms as to costs, advertisements or otherwise, as the court may think fit; and if in any such proceedings for revocation the court decides that the patent is invalid, the court may allow the specification to be amended under this section instead of revoking the patent."
The power conferred in this last clause of the sub-section is not replicated in s. 38(2) of the 1992 Act. Thus, it is said, the court is not expressly empowered to amend a patent found to be invalid. Rather it must revoke it.
Whatever might be said in favour of this argument if Nobel were attempting to proceed as Norton originally thought (and I am not to be taken as expressing any view as to its correctness or otherwise) it has no application in the context of what it is now proposed by Nobel.
In my opinion the wording of s. 38(2) is clear.
The sub-section confers a discretion on the court. In proceedings in which the validity of a patent is put in issue the court may allow the proprietor of the patent to amend the specification on such terms as the court thinks fit. This discretion can be exercised at any time while the court is seised of the proceedings.
Exercise of Discretion
In Nikken Kosakusho Works v. Pioneer Trading Co. [2005] EWCA Civ 906 (29th June, 2005) the Court of Appeal in England had to consider the exercise of the discretion given by s. 75 of The Patents Act, 1977, which is the same as that conferred on this court by s. 38(2) of the 1992 Act.
In the Nikken case the Court of Appeal was considering an appeal from the second judgment delivered by Mann J. in the High Court. In his first, unappealed judgment, that judge held that Nikken's U.K patent was invalid. By his second judgment he refused to allow Nikken an opportunity to amend the patent in a way which they contended would save its validity. His reasons were twofold: first, by the exercise of his discretion and, second, on the basis that the proposed amendment would contravene s. 76(3) of The Patents Act, 1977.
In the course of the leading judgment which was delivered by Jacob L.J. he said:-
"There are three different situations in which the exercise of the discretion to allow amendment of a patent may be sought:
(a) before a trial;
(b) after trial, at which certain claims have been held valid but other claims held invalid, the patentee simply wishing to delete the invalid claims (I would include here also the case where the patentee wishes to rewrite the claim so as to exclude various dependencies as in Hallen v. Brantia [1990] F.S.R. 134. There the patentee is in effect continuing to claim which he had claimed before but in a much smaller way); and
(c) after a trial in which all claims have been held invalid but the patentee wishes to insert what he hopes are validating amendments."
Dealing with the first of these situations Jacob L.J. said:-
"Clearly, if the amendment is proposed in sufficient time before trial the defendant has a full opportunity to attack the proposed amended claims, not only on their allowability or in the exercise of discretion, but on their ultimate validity. The existing procedure for an application to amend the patent specification is governed by CPR Part 63.10. The procedure is by way of an application notice, service on the comptroller, subsequent advertisement and so on. The procedures can, in appropriate circumstances, be gone through quickly or gone through provisionally on the basis that probably no third party will ever come in to oppose. It may be noted that the rules specifically require by Part 63.10 that the patentee must state whether he will contend that the claims prior to amendment are valid. That means that in advance of trial everyone knows where they stand. The patentee is either saying that the original claims are all right or not, and he is plainly also saying that the proposed amendment claims are all right."
Jacob L.J. then dealt with the second possibility. He said:-
"In case (b), after trial but where effectively no more than claim dependency is being dealt with, again the position is clear. Following a conclusion that some claims are valid and others are not, the patentee is normally entitled to relief pursuant to s. 63 of the Act. Normally the court will impose as a condition of relief that the invalid claims be amended by deletion. Problems may arise if it were held that the patentee had been covetous in some way or other and ought not to be allowed to amend at all. Nothing of the question arises here."
The Lord Justice then went on to deal with a third possibility. This is the one which Norton, on foot of the exchange of letters, believed Nobel wished to pursue. He said:-
"Class (c) involves something different, a proposed claim which was not under attack and could not have been under attack prior to trial. If the court is to allow such a claim to be propounded after trial, there is almost bound to be a further battle which would arise in the proposed amendment proceedings. That battle will be over whether or not the proposed claim is valid. I say 'almost bound' because I can just conceive a case where the point was covered by the main litigation in some way or other."
Later in his judgment he pointed out that the latter proposal could lead to two trials instead of one. He said:-
"In my judgment, an exercise of discretion to allow that would be improper for three distinct reasons, which in the end all amount to the same."
The first of these reasons he described as a straight forward application of the principles of Henderson v. Henderson [1843] 3 Hare 100. He went on:-
"Secondly, specifically in the field of patents, the courts have made it plain that this sort of post trial amendment should not be allowed if it would involve a second trial on validity. In Windsurfing v. Taber Marine [1985] R.P.C. 59, Lord Oliver was considering a post trial application for amendment. He rejected it, as did the court, noting that as follows: 'In the first place, as Mr. Young has pointed out, it was for the plaintiffs, if they wished to support their claim to monopoly on some alternative basis, to raise the point and adduce the appropriate evidence for that purpose at the trial. In fact, however, no one, from first to last, advanced or considered the specialised qualities of a surf board as an inventive concept and the suggestion that there should be an adjournment for this now to be raised and investigated as the basis for the claimed monopoly involves, in effect, a fresh trial, the recalling of most, if not all, of the most important witnesses, and a considerable degree of recapitulation of the evidence as well as the calling of fresh evidence on an issue never previously suggested either in the specification or in the pleadings. We would require considerable persuasion that the imposition upon a successful defendant of such a manifestly inconvenient and oppressive course would be a proper exercise of discretion even in an otherwise strong case'. Applying that here, plainly there would be a second trial, the very thing that Oliver L.J. is saying ought not to happen. Mr. Baldwin's only answer is that the second trial would be a little one. That will not do.
Aldous L.J. was to exactly the same effect more recently in Lubrizol Corp. v. Esso Petroleum Co. [1988] R.P.C. 727, 790 which epitomises it all: 'For my part, I believe it is a fundamental principle of patent litigation that a party must bring before the court the issues that he seeks to have resolved, so as to enable the court to conclude the litigation between the parties'.
It may be noted in passing that in no patent case since the modern system of amendment came in has Mr. Baldwin been able to find an instance where somebody was able to make a validating amendment post trial of the kind we are now considering."
Jacob L.J. then went on to consider the third reason which arose from a consideration of the Civil Procedure Rules 1998.
He said:-
"Thirdly, the CPR are dead against the kind of procedure which Mr. Baldwin seeks to invoke. The whole code is governed by the overriding objective contained in part 1.1.1.
1.1.2 specifies some examples of cases dealing with a case justly. 2(b) is 'saving expense'. Plainly a second trial would cause increased expense. 2(d) is ensuring that it is 'dealt with expeditiously and fairly'. Having two bites at the cherry is doing neither of those things.
The rules descend into more detail. Under the courts duty to manage cases, 1.4 requires the court actively to manage cases and 1.4.2 says that active case management includes 'identifying the issues at an early stage and dealing with as many aspects of the case as it can on the same occasion'. Henderson v. Henderson is fully reinforced by the new rules."
In my opinion precisely the same reasoning applies in this jurisdiction. First, the principles of Henderson v. Henderson are applicable in this State. Secondly, even if there is jurisdiction to allow post trial amendments (and there may not be) they should not be allowed because they would involve a second trial on validity. Thirdly, Order 63(A) of the Rules of the Superior Courts which govern cases in the commercial list seek to achieve precisely the same object as the relevant provisions of the CPR in England; they seek to bring about a just and expeditious trial whilst seeking to minimise costs.
The decision in Nikken rules out the possibility of post trial amendment. But it seems to me to accept that it permissible for a patentee to defend an action for revocation by maintaining that the claims as granted are valid whilst simultaneously seeking to amend in the event that the original claims are struck down. That is what is sought to be done in the present case.
I do not read into s. 38 of the 1992 Act any requirement that in seeking the exercise of the discretion conferred by it a respondent in proceedings may not assert the validity of the claims whilst seeking to amend lest he be unsuccessful. Or to put it as counsel for Nobel said, it was not the intention of the legislature that capitulation in the invalidity proceedings should be the price for being able to avail of the facility to amend.
I do not think that Norton is assisted by the principal decisions relied upon. One was Raleigh Cycle Co. Limited v. H. Miller and Co. Limited [1950] 67 R.P.C. 226. That case does not appear to me to be on point and in any event dealt with differently worded legislation.
The other case mentioned, namely Lubrizol Corp. v. Esso Petroleum Co. Limited [1998] R.P.C.727 is cited with approval by Jacob L.J. and the principle enunciated there is not breached by what is proposed in the present case.
In my view, the proposal of Nobel does not run counter to what was described by Aldous L.J. as the fundamental principle of patent litigation, namely that a party must bring before the court the issues that he seeks to have resolved so as to enable the court to conclude the litigation between the parties. Nobel wishes to seek leave pursuant to the provisions of s. 38(2) to bring an amended claim which it will seek to rely upon in the event of the original claims being condemned. That does not appear to me to be impermissible.
If such an amendment is permitted I am satisfied that an appropriate costs order can address any inconvenience which may be suffered by Norton.
In my view, the application for leave to amend should be brought timeously. Such an application would then fall to be considered on the merits. Whilst that is for another day I am of opinion that the principles expressed by Aldous L.J. in Smith Klein and French Laboratories Limited v. Evans Medical Limited [1989] S.F.R. 561, have much to recommend them in the consideration of such an application. There he said:-
"The discretion as to whether or not to allow amendment is a wide one and the cases illustrate some principles which are applicable to the present case. First, the onus to establish that amendments should be allowed is upon the patentee and full disclosure must be made of all relevant matters. If there is a failure to disclose all the relevant matters, amendment will be refused. Secondly, amendment will be allowed provided the amendments are permitted under the Act and no circumstances arise which would lead the court to refuse the amendment. Thirdly, it is in the public interest that amendment is sought promptly. Thus, in cases where a patentee delays for an unreasonable period before seeking amendment, it will not be allowed unless the patentee shows reasonable grounds for his delay: such includes cases where a patentee believed that amendment was not necessary and had reasonable grounds for that belief. Fourthly, a patentee who seeks to obtain an unfair advantage from the patent, which he knows or should have known should be amended, will not be allowed to amend. Such a case is where a patentee threatens an infringer with his unamended patent after he knows, or should have known, of the need to amend. Fifthly, the court is concerned with the conduct of the patentee and not with the merit of the invention."
Conclusion
As part of the ongoing case management of this petition I direct that the application to amend should be brought now. It is appropriate that the procedures set forth by Part 63.10 of the CPR referred to by Jacob L.J. in the Nikken case be followed, namely Nobel must state whether it will contend that the claims prior to amendment are valid. Thus everyone will know where they stand.
Approved: Kelly J.